USPTO Patents Application 10530900

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
I nilid Stall-, l'atint and Trademark Office

Address: COMMISSIONER FOR PATENTS

APPLICATION NO.

10/530,900

FILING DATE

04/11/2005

FIRST NAMED INVENTOR

Warren Thomas Johnson

ATTORNEY DOCKET NO. CONFIRMATION NO.

2002P87057WOUS

28524 7590 02/19/2009

SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830

ANDERSON, DENISE R

PAPER NUMBER

DELIVERY MODE

Please find below and/or attached an Office communication concerning this application or proceeding.

The time period for reply, if any, is set in the attached communication.

PTOL-90A (Rev. 04/07)

l/ffflrC? nVrliUli Otfff Iff ids y

Application No.

10/530,900

Applicant(s)

JOHNSON, WARREN THOMAS

Examiner

Denise R. Anderson

Art Unit

1797

- The MAILING DATE of this communication appears on the cover sheet with the correspondence address —
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1 .704(b).

Status

1 )KI Responsive to communication(s) filed on 08 December 2008 .
2a )^ This action is FINAL. 2b)D This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.

Disposition of Claims

4) ^ Claim(s) 10-13 and 15-36 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) D Claim(s) is/are allowed.

6) |EI Claim(s) 10-13 and 15-36 is/are rejected.

7) 0 Claim(s) is/are objected to.

8) D Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) Q The specification is objected to by the Examiner.

10) ^ The drawing(s) filed on 31 December 2007 is/are: a)^ accepted or b)D objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).

1 1) D The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. § 119

12) ^ Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
a)E| All b)D Some * c)D None of:

1 .□ Certified copies of the priority documents have been received.

20 Certified copies of the priority documents have been received in Application No. .

3.^ Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attach ment(s)

1) D Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-41 3)

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) Paper No(s)/Mail Date. .

3) Information Disclosure Statement(s) (PTO/SB/08) 5 ) □ Notice of Informal Patent Application
Paper No(s)/Mail Date 1 2 December 2008 . 6) □ Other: .

PTOL-T26 d (Rev e 08-06r

Office Action Summary

Part of Paper No./Mail Date 20090216

Application/Control Number: 10/530,900 Page 2

Art Unit: 1797

DETAILED ACTION

1 . The text of those sections of Title 35, U.S. Code not included in this action can
be found in a prior Office action.

Claim Rejections - 35 USC § 103

2. Claims 1 0-1 3 and 1 5-36 are rejected under 35 U.S.C. 1 03(a) as being
unpatentable over Cote et al. (US 5,607,593, Mar. 4, 1997), in view of Miyashita et al.
(US Patent No. 6,280,626 B1 , Aug. 28, 2001 ), in further view of Ide (JP2277528, Nov.
14, 1990) to teach that it is inherent that gas fed into the aeration hood will displace
feed liquid and lower a level of feed liquid in the aeration hood when an open-ended
tube is distinct from the side wall of the aeration hood, as recited.

3. The patentability analysis first addresses the filtration arrangement (claims 1 0-1 3,
15-21 and 35) and the treatment system (claims 27-34) since both sets of claims
describe a similar apparatus. The patentability analysis will then address the
membrane cleaning method (claims 22-26 and 36).

4. With regards to independent claim 10, Cote et al. discloses a "water-treatment
installation" with membrane modules (membranes 3) vertically positioned within a feed
tank (reactor 1). Cote et al., Abstract, line 1; Figures 1-11. Each membrane module is
surrounded by a tube (Figures 1-11, sheath 5 or 5a) that is open-ended such that the
membrane module is in fluid communication with the feed tank interior through aeration
openings (Figures 5-6 and 9-11, open-worked zones 8 and 8a). Cote et al. discloses
the recited "open-ended tube extending downwardly" in Figures 10 and 1 1 where filtrate

Application/Control Number: 10/530,900 Page 3

Art Unit: 1797

is removed from the top of the membrane modules, as opposed to Figures 5-6 and 9
where filtrate is removed from the bottom.

5. Cote et al. discloses the claimed invention except for the aeration hood.
Miyashita et al. teaches that it is known to construct such an aeration hood.
Specifically, Miyashita et al teaches, "A membrane separation assembly for separating
solids from water [that] includes opposing wall structures, a membrane module unit, and
a gas diffuser disposed below the membrane module unit." Miyashita et al., Abstract,
lines 1-4. Miyashita et al. further teaches, "The enclosure subassembly (applicant's
aeration hood) comprises enclosure wall structures 106a and 106b (applicant's side
walls). . . . The enclosure subassembly can completely surround the membrane module
unit 102 (applicant's membrane modules in open-ended tubes with a hood side wall
extending below aeration openings) ... or can only partially enclose the membrane
module 102. .. . The enclosure wall structures 106a and 106b may be connected to one
another . . . [with] a plate (applicant's upper wall) extending horizontally between the
enclosure wall structures." Miyashita et al., Column 4, lines 44-45, 48-50, 59-61 , 67 and
Column 5, line 1 where Figures 1-12 are being referenced. In Figures 25-30, Miyashita
et al. discloses other embodiments of applicant's aeration hood (assembly 220) to
enclose membrane modules (membrane modules 202) with side walls (walls 206) and
an upper wall ("a plate extending horizontally between the enclosure wall structures,"
Column 4, line 67 to Column 5, line 1). In Figures 51-54, Miyashita et al. discloses
multiple blocks of membranes within the aeration hood analogous to applicant's more
than one tube within the aeration hood. Referring to Figure 53, Miyashita et al. teaches,

Application/Control Number: 10/530,900 Page 4

Art Unit: 1797

"The arrangement of the enclosure wall structures 306 partition plate 318 in parallel
relation to the membrane modulus 303 further improves the uniformity and efficiency of
cleaning." Miyashita et al., Column 15, lines 32-35.

6. To recap, Cote et al. discloses the claimed invention except for the aeration
hood. Miyashita et al. teaches that it is known to construct such an aeration hood. It
would have been obvious to one having ordinary skill in the art at the time the invention
was made to have constructed the Cote et al. filtration apparatus with an aeration hood
as taught by Miyashita et al., since Miyashita et al. states at Column 2, lines 17-21, that
the aeration hood would be "constructed and arranged to guide the gas diffused by the
gas diffuser to the surfaces of the separating membranes" to "clean the surfaces of
vertically oriented separating membranes of the membrane modules with a gas-liquid
mixed flow generated by the diffused gas" - and that the aeration hood would still
"permit the liquid to flow through the enclosure subassembly."

7. Cote et al., in view of Miyashita et al., discloses or suggests the claimed
invention except for explicitly teaching a tube distinct from the aeration hood side wall
such that gas fed into the aeration hood will displace feed liquid and lower a level of
feed liquid in the aeration hood. In Figures 1-5, Ide discloses a tube (reference part 4)
distinct from the aeration hood side wall (drum 6 with cylindrical side wall) and further
teaches that it is inherent that gas fed into the aeration hood (Figure 2) displaces feed
liquid L and lowers the level L of the feed liquid (Figure 3) in the aeration hood. It would
have been obvious to one having ordinary skill in the art at the time the invention was
made to have made the Cote et al. tubes distinct from the aeration hood side wall since

Application/Control Number: 10/530,900 Page 5

Art Unit: 1797

it was known in the art that such an arrangement would inherently cause a gas fed into
the aeration hood to displace feed liquid and lower the level of feed liquid in the aeration
hood. See, for example, Figures 1-5 of Ide.

8. Cote et al., in view of Miyashita et al., in further view of Ide, discloses or suggests
the claimed invention. Ide further teaches the recited open-ended tube (Figures 1-5,
reference part 4) extending downwardly from the upper wall (Figures 1-5, reference part
3) which encloses the membranes (Figures 1-5, reference part 2) and serves to guide
the air bubbles (Figures 2 and 3, reference part 22) during "time of bubbling." Ide,
Abstract, line 27. It would have been obvious to one having ordinary skill in the art at
the time the invention was made, in the Cote et al. filtration arrangement, to have
enclosed the membranes in an open-ended tube extending downwardly instead of
upwardly, as taught by Ide, since Ide states at line 27 of the Abstract and shows in
Figures 1-5 that such a modification would guide the air bubbles during "time of
bubbling."

9. In summary, Cote et al., in view of Miyashita, in further view of Ide, discloses or
suggests all claim 10 limitations.

10. Claims 20-21 recite limitations already addressed in claim 10. Therefore, Cote et
al., in view of Miyashita et al., in further view of Ide, discloses or suggests all limitations
recited in claims 20-21 .

1 1 . Dependent claims 11-19 recite further limitations on the filtration arrangement
which Cote et al., in view of Miyashita et al., in further view of Ide, discloses or
suggests.

Application/Control Number: 10/530,900 Page 6

Art Unit: 1797

12. Cote et al. discloses aeration openings (Figures 5-6 and 9-1 1 , open-worked
zones 8 and 8a) at the lower end of the tube (Figures 1-11, sheath 5 or 5a) [claim 1 2]
that contains the membrane modules (Figures 1-11, membranes 3) [claim 13]. The
Cote et al. aeration openings (open-worked zones 8 and 8a) are shown as slots [claim
15] in Figures 6, 9, and 10. The slot aeration openings are adjacent to the lower end of
the tube (Figures 6, 9, and 10, open-worked zones 8 and 8a) [claim 18] and, in one
case, extend upwardly from the lower end (Figure 10, open-worked zone 8) [claim 19].

13. In summary, Cote et al., in view of Miyashita et al., in further view of Ide,
discloses or suggests all limitations recited in claims 1 2-1 3, 1 5-1 6, and 1 8-1 9.

14. As was discussed in the claim 10 patentability analysis, Miyashita et al. discloses
many embodiments of applicant's aeration hood assembly. Specifically, in Figures 25-
30, Miyashita et al. teaches an aeration hood (assembly 220) to enclose membrane
modules (membrane modules 202) with side walls (walls 206) and an upper wall ("a
plate extending horizontally between the enclosure wall structures," Column 4, line 67 to
Column 5, line 1 ). In Figures 9-1 2, Miyashita et al. further teaches "at least one sidewall
that extends downward to at least a downward extent of a lower end of the at least one
open-ended tube," as recited in claim 17, where the sidewalls are enclosure wall
structures 106 that enclose the membrane module units 102 (applicant's membranes
mounted in tubes) with a gas diffuser 104 (applicant's aeration header) underneath. It
would have been obvious to one having ordinary skill in the art at the time the invention
was made to have extended the aeration hood side wall below the Cote et al. tubes, as

Application/Control Number: 10/530,900 Page 7

Art Unit: 1797

taught by Miyashita et al., since Miyashita et al. states at Column 7, lines 7-12, that
such a modification would "promote efficient scrubbing of the separating membranes."

15. In summary, Cote et al., in view of Miyashita et al., in further view of Ide,
discloses or suggests all claim 17 limitations.

16. Claim 1 1 recites that the aeration hood shares a feed tank wall and that the
aeration's upper wall is sealed to its side walls. In Figures 1, 25, and 50, Miyashita et al.
schematically locates the hood in the center of the feed tank instead of at the side. It
would have been obvious to one having ordinary skill in the art at the time the invention
was made to have located the aeration hood from the center to the side where it shared
a wall with the feed tank, since it has been held that rearranging parts of an invention
involves only routine skill in the art. In re Japikse, 86 USPQ 70.

17. As was discussed in the claim 10 patentability analysis, Miyashita et al. discloses
many embodiments of applicant's aeration hood assembly. Specifically, in Figures 1-12
Miyashita et al. teaches, "The enclosure subassembly (applicant's aeration hood)
comprises enclosure wall structures 106a and 106b (applicant's side walls). . . . The
enclosure subassembly can completely surround the membrane module unit 102
(applicant's membrane modules in open-ended tubes with a hood side wall extending
below aeration openings) ... or can only partially enclose the membrane module 102. .

. . The enclosure wall structures 106a and 106b may be connected to one another . . .
[with] a plate (applicant's upper wall) extending horizontally between the enclosure wall
structures." Miyashita et al., Column 4, lines 44-45, 48-50, 59-61, 67 and Column 5,
line 1 where Figures 1-12 are being referenced. In other words, Miyashita et al. teaches

Application/Control Number: 10/530,900 Page 8

Art Unit: 1797

the aeration hood's upper wall can be sealed to its sidewalls (wall structures 106a and
106b) through a plate (applicant's upper wall). It would have been obvious to one
having ordinary skill in the art at the time the invention was made to have sealed the
aeration hood's upper plate to its sidewalls as taught by Miyashita et al., since Miyashita
et al. states at Column 4, line 59 to Column 5, line 4 that such a modification would
serve to connect the sidewalls.

18. In summary, Cotes et al., in view of Miyashita et al., in further view of Ide,
discloses or suggests all claim 1 1 limitations.

1 9. Claims 27-34 recite a water treatment system similar to the filtration arrangement
recited in claims 10-19 and are also rejected over Cote et al., in view of Miyashita et al.,
in further view of Ide.

20. Independent claim 27 recites membrane modules, within tubes with upper ends
sealingly attached to the aeration hood. Cote et al. discloses a "water-treatment
installation" with membrane modules (membranes 3). Cote et al., Abstract, line 1 ;
Figures 1-11. Each membrane module is surrounded by a tube (Figures 1-11, sheath 5
or 5a). Cote et al., in Figure 6, teaches the tube 5a, extending part way along the length
of the membranes 3, as recited.

21 . Cote et al. discloses the claimed invention except for the aeration hood.
Miyashita et al. teaches that it is known to construct such an aeration hood.
Specifically, Miyashita et al teaches, "A membrane separation assembly for separating
solids from water [that] includes opposing wall structures, a membrane module unit, and

Application/Control Number: 10/530,900 Page 9

Art Unit: 1797

a gas diffuser disposed below the membrane module unit." Miyashita et al., Abstract,
lines 1-4. Miyashita et al. further teaches, "The enclosure subassembly (applicant's
aeration hood) comprises enclosure wall structures 106a and 106b (applicant's side
walls). . . . The enclosure subassembly can completely surround the membrane module
unit 102 (applicant's membrane modules in open-ended tubes with a hood side wall
extending below aeration openings) ... or can only partially enclose the membrane
module 102. .. . The enclosure wall structures 106a and 106b may be connected to one
another . . . [with] a plate (applicant's upper wall) extending horizontally between the
enclosure wall structures." Miyashita et al., Column 4, lines 44-45, 48-50, 59-61, 67 and
Column 5, line 1 where Figures 1-12 are being referenced. In Figures 25-30, Miyashita
et al. discloses other embodiments of applicant's aeration hood (assembly 220) to
enclose membrane modules (membrane modules 202) with side walls (walls 206) and
an upper wall ("a plate extending horizontally between the enclosure wall structures,"
Column 4, line 67 to Column 5, line 1). Miyashita further teaches that the aeration
hood's upper wall (top of sidewalls 106) can extend below the membrane modules
(membrane modules 1 02) in Figures 6 and 1 0 such that the upper ends of the tubes are
sealingly attached to the upper wall of the hood, as recited in claim 27.
22. To recap, Cote et al. discloses the claimed invention except for the aeration
hood. Miyashita et al. teaches that it is known to construct such an aeration hood. It
would have been obvious to one having ordinary skill in the art at the time the invention
was made to have constructed the Cote et al. filtration apparatus with an aeration hood
as taught by Miyashita et al., since Miyashita et al. states at Column 2, lines 17-21, that

Application/Control Number: 10/530,900 Page 10

Art Unit: 1797

the aeration hood would be "constructed and arranged to guide the gas diffused by the
gas diffuser to the surfaces of the separating membranes" to "clean the surfaces of
vertically oriented separating membranes of the membrane modules with a gas-liquid
mixed flow generated by the diffused gas" - and that the aeration hood would still
"permit the liquid to flow through the enclosure subassembly."

23. Cote et al., in view of Miyashita, discloses or suggests the claimed invention
except for explicitly teaching a tube distinct from the aeration hood side wall such that
gas fed into the aeration hood will displace feed liquid and lower a level of feed liquid in
the aeration hood. In Figures 1-5, Ide discloses a tube (reference part 4) distinct from
the aeration hood side wall (drum 6 with cylindrical side wall) and further teaches that it
is inherent that gas fed into the aeration hood (Figure 2) displaces feed liquid L and
lowers the level L of the feed liquid (Figure 3) in the aeration hood. It would have been
obvious to one having ordinary skill in the art at the time the invention was made to
have made the Cote et al. tubes distinct from the aeration hood side wall since it was
known in the art that such an arrangement would inherently cause a gas fed into the
aeration hood to displace feed liquid and lower the level of feed liquid in the aeration
hood. See, for example, Figures 1-5 of Ide.

24. In summary, Cote et al., in view of Miyashita, in further view of Ide, discloses or
suggests all claim 27 limitations.

25. Dependent claims 28 and 29 recite limitations already discussed in the
patentability analyses of claims 16 and 10, respectively. As such, Cote et al., in view of

Application/Control Number: 10/530,900 Page 1 1

Art Unit: 1797

Miyashita et al., in further view of Ide, discloses or suggests all limitations recited in
claims 28 and 29.

26. Dependent claims 30-32 recite one further limitation that was already discussed
in the claim 10 patentability analysis and further recite that the aeration hood is partially
filled with air and water to be treated. In Figure 1 , Miyashita et al. discloses that the
aeration hood (wall structures 106) is partially filled with air (air bubbles emanating from
gas diffuser 104) and water to be treated (to-be-treated liquid 101a). Miyashita et al.
further teaches, "The gas-liquid mixed flow containing the bubbles 104b scrubs the
surfaces of the separating membranes 113, thereby preventing solid matter from being
deposited on and clogging the surfaces of the membranes 113." Miyashita et al.,
Column 6, lines 46-50. It would have been obvious to one having ordinary skill in the art
at the time the invention was made to have filled the aeration hood with air and water to
be treated as taught by Miyashita et al., since Miyashita et al. states at Column 6, lines
46-50, that such a modification would create a "gas-liquid mixed flow containing bubbles
104b [to scrub] the surfaces of the separating membranes 113, thereby preventing solid
matter from being deposited on and clogging the surfaces of the membranes 113."

27. In summary, Cote et al., in view of Miyashita et al., in further view of Ide,
discloses or suggests all limitations recited in claims 30-32.

28. Dependent claims 33-35 recite that the tube has a second end in fluid
communication with the water to be treated [claim 33] with aeration openings located
near the upper end [claims 34 and 35]. Cote et al. teaches these second aeration

Application/Control Number: 10/530,900 Page 12

Art Unit: 1797

openings (open-worked zone 8 or 8a) in the tube (sheath 5 or 5a) near the upper end,
as shown in Figures 5-6 and 9-10.

29. In summary, Cote et al., in view of Miyashita et al., in further view of Ide,
discloses or suggests all limitations recited in claims 33-35.

30. Claim 22 recites a method for cleaning a membrane module in a feed tank which
Cote et al., in view of Miyashita et al., in further view of Ide, discloses or suggests.
Independent claim 22 recites the following method:

(1) Provide an aeration hood which shrouds a membrane module. The aeration
hood shrouds an open-ended tube that at least partially encloses the membrane
module. The membrane module is attached to the top of the hood and there is
an aeration opening at the top of the tube.

(2) Immerse the above in the feed liquid.

(3) Aerate such that gas passes through the aeration opening into the tube.

In the apparatus patentability analysis above, Cote et al., in view of Miyashita et al., in
further view of Ide, discloses or suggests the apparatus used in the methods claims.
Cote et al. further teaches a "water-treatment installation" with membrane modules
(membranes 3). Cote et al., Abstract, line 1; Figures 1-11. Cote et al. also teaches
each membrane module is surrounded by a tube (Figures 1-11, sheath 5 or 5a). Cote
et al. discloses that the membrane modules are immersed in a tank (reactor 1) as
shown in Figures 1 , 3-4, 7-8, and 1 1 . In Figure 9, Cote et al. further teaches that gas is

Application/Control Number: 10/530,900 Page 13

Art Unit: 1797

supplied (via distribution network 15) that passes through the aeration openings (lower
open-worked zones 8a) into the tube (sheath 5a).

31 . Cote et al. discloses the claimed invention except for immersing the hood in the
liquid to be treated and providing gas within the hood. In Figure 1 , Miyashita et al.
discloses such a hood in the form of wall structures 106 and the hood that is partially
filled with air (air bubbles emanating from gas diffuser 104) and water to be treated (to-
be-treated liquid 101a). Miyashita et al. further teaches, "The gas-liquid mixed flow
containing the bubbles 104b scrubs the surfaces of the separating membranes 113,
thereby preventing solid matter from being deposited on and clogging the surfaces of
the membranes 113." Miyashita et al., Column 6, lines 46-50. It would have been
obvious to one having ordinary skill in the art at the time the invention was made, in the
Cote et al. method, to have immersed the aeration hood in the water to be treated and
to have provided air bubbles as taught by Miyashita et al., since Miyashita et al. states
at Column 6, lines 46-50, that such a modification would create a "gas-liquid mixed flow
containing bubbles 104b [to scrub] the surfaces of the separating membranes 113,
thereby preventing solid matter from being deposited on and clogging the surfaces of
the membranes 113."

32. In summary, Cote et al., in view of Miyashita, in further view of Ide, discloses or
suggests all claim 22 limitations.

33. Regarding dependent claims 23-26 and claim 36, Cote et al. discloses that the
membranes remain immersed during cleaning such that there is a liquid seal at the

Application/Control Number: 10/530,900 Page 14

Art Unit: 1797

lower end of the tube [claim 23] across the aeration openings [claim 24]. Cote et al.,
Figures 6 and 9-1 1 . Cote et al. further teaches that permeate is withdrawn through the
membrane module [claim 25]. Cote et al., Figure 5 with permeate recovered at base
32, Figure 6 with permeate recovered through wall 9 into permeate-recovery chamber
10, Figure 10 with permeate recovered at the top into permeate-recovery chamber 10,
and Figure 1 1 with permeate recovered at the top via suction pump 17. In Figure 9,
Cote et al. also teaches that that the membranes are scoured with the gas passing
through the aeration openings in the wall of the tube. Cote et al. discloses, "The ozone
could thus be produced out of air or oxygen ... to serve both as a circulation fluid and
an oxidizing fluid. . . . Thus, in addition to the chemical action of the ozone, there is the
mechanical action of the bubbles which are advantageously used to unclog the
membranes." Cote et al., Column 3, lines 10, 27-28, and Column 4, lines 21-24. Thus,
in Figures 9-1 1 , Cote et al. discloses that gas passing through the aeration openings
(open-worked zones 8a) scours the membrane module (membrane module 3) within the
tube (sheath 5a) with gas [claim 25]. And finally, Cote et al. discloses that the tank can
be drained [claim 36] in Figures 1 and 7-8 and at Column 10, lines 41-42, when Cote
teaches, "The reactor 1 (applicant's tank) furthermore has a drain 28. This bottom drain
may be used to completely empty the reactor periodically."
34. In summary, Cote et al., in view of Miyashita et al., in further view of Ide,
discloses or suggests all limitations recited in claims 23-26.

Application/Control Number: 10/530,900 Page 15

Art Unit: 1797

Response to Arguments

35. Applicant's arguments with respect to the new limitations of claims 10, 20, 22,
and 27 have been considered but are moot in view of the new ground(s) of rejection.

36. Applicant's remaining arguments filed December 8, 2008 have been fully
considered but they are not persuasive.

37. Applicant's arguments are listed below with the examiner's response after each
argument. Applicant made these arguments regarding claims 10-13 and 15-34.

a. Applicant argues that Cote et al., in view of Miyashita et al. "could not have
been validly combined" because "the membranes of Cote are already
surrounded by sheaths 5, 5a and surrounding the sheaths with additional
housing, such as sidewalls 206 or 220 of Miyashita would serve no additional
purpose." Applicant's Remarks, p. 8, lines 11 and 25-27. Applicant further
argues that instead, this would "increase the size, footprint, complexity, and
cost of the filtration system according to Cote and provide no benefits to the
system." Applicant's Remarks, p. 9, lines 9-10. Finally, applicant argues that
the aeration hood of the Miyashita et al. reference cannot be bodily
incorporated into the Cote et al. filtration arrangement. Applicant's Remarks,
p.11-14.

The examiner responds that In Figures 51-54, Miyashita et al. discloses
multiple blocks of membranes within the aeration hood analogous to
applicant's more than one tube within the aeration hood. Referring to Figure
53, Miyashita et al. teaches, "The arrangement of the enclosure wall

Application/Control Number: 10/530,900 Page 16

Art Unit: 1797

structures 306 partition plate 318 in parallel relation to the membrane
modulus 303 further improves the uniformity and efficiency of cleaning."
Miyashita et al., Column 15, lines 32-35.

In response to applicant's argument that there is no suggestion to combine
the references, the examiner recognizes that obviousness can only be
established by combining or modifying the teachings of the prior art to
produce the claimed invention where there is some teaching, suggestion, or
motivation to do so found either in the references themselves or in the
knowledge generally available to one of ordinary skill in the art. See In re
Fine, 837 F.2d 1071 , 5 USPQ2d 1596 (Fed. Cir. 1988) and In re Jones, 958
F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992). In this case, as was stated in
the above patentability analysis, Cote et al. discloses the claimed invention
except for the aeration hood. Miyashita et al. teaches that it is known to
construct such an aeration hood. It would have been obvious to one having
ordinary skill in the art at the time the invention was made to have constructed
the Cote et al. filtration apparatus with an aeration hood as taught by
Miyashita et al., since Miyashita et al. states at Column 2, lines 1 7-21 , that the
aeration hood would be "constructed and arranged to guide the gas diffused
by the gas diffuser to the surfaces of the separating membranes" to "clean the
surfaces of vertically oriented separating membranes of the membrane
modules with a gas-liquid mixed flow generated by the diffused gas" - and

Application/Control Number: 10/530,900 Page 17

Art Unit: 1797

that the aeration hood would still "permit the liquid to flow through the
enclosure subassembly."

In response to applicant's argument that the aeration hood disclosed by
Miyashita et al. cannot be bodily incorporated into the Cote et al. filtration
arrangement, the test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871
(CCPA1981).

b. Applicant argues, "Sheaths 5, 5a of Cote do not comprise open-ended tubes
extending downwardly from the upper wall of an aeration hood as recited in
independent claims 10 and 22." Applicant's Remarks, p. 9, lines 22-23.

The examiner responds as in the above patentability analysis. Cote et al.,
in view of Miyashita et al., in further view of Ide, discloses or suggests the
claimed invention. Ide further teaches the recited open-ended tube (Figures
1-5, reference part 4) extending downwardly from the upper wall (Figures 1-5,
reference part 3) which encloses the membranes (Figures 1-5, reference part
2) and serves to guide the air bubbles (Figures 2 and 3, reference part 22)
during "time of bubbling." Ide, Abstract, line 27. It would have been obvious

Application/Control Number: 10/530,900 Page 18

Art Unit: 1797

to one having ordinary skill in the art at the time the invention was made, in
the Cotes et al. filtration arrangement, to have enclosed the membranes in an
open-ended tube extending downwardly from the upper wall of the aeration
hood, as taught by Ide, since Ide states at line 27 of the Abstract and shows
in Figures 1-5 that such a modification would guide the air bubbles during
"time of bubbling."

c. Applicant argues, "The Examiner appears to assert that open-worked zones 8
and 8a of sheaths 5, 5a of Cote are aeration openings" but "they cannot be"
because the embodiments Cote et al. discloses in "FIGS. 1 , 4, 5, 6, 6A, 6B, 7,
and 8" do not function as such. Applicant's Remarks, p. 25-27 and 29.

The examiner's response is that the open-worked zones 8 and 8a function
as aeration openings exactly as applicant envisions in Figure 9. Even so,
according to MPEP 21 14 and the courts, "[Apparatus claims cover what a
device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb
Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) emphasis
in original).

d. Applicant argues Miyashita et al. teaches away from a solid enclosure
because Miyashita et al. states that the plate or wall structure "' should
include flow passages therethrough so as to permit liquid to flow through the

Application/Control Number: 10/530,900 Page 19

Art Unit: 1797

enclosure wall subassembly in a vertical direction.' (Miyashita at Col. 5, lines
2-4)."

The examiner responds that the operative word is "should." Miyashita et
al. discloses both walls with passages (Figure 26) and walls without (Figure
2A).

Conclusion

38. Applicant's amendment necessitated the new ground(s) of rejection presented in
this Office action. Accordingly, THIS ACTION IS MADE FINAL. See M PEP

§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
CFR 1.136(a).

39. A shortened statutory period for reply to this final action is set to expire THREE
MONTHS from the mailing date of this action. In the event a first reply is filed within
TWO MONTHS of the mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory period, then the
shortened statutory period will expire on the date the advisory action is mailed, and any
extension fee pursuant to 37 CFR 1 .136(a) will be calculated from the mailing date of
the advisory action. In no event, however, will the statutory period for reply expire later
than SIX MONTHS from the date of this final action.

40. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Denise R. Anderson whose telephone number is

Application/Control Number: 10/530,900 Page 20

Art Unit: 1797

(571)270-3166. The examiner can normally be reached on Monday through Thursday,
from 8:00 am to 6:00 pm.

41 . If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Walter D. Griffin can be reached on 571-272-1447. The fax phone number
for the organization where this application or proceeding is assigned is 571-273-8300.

42. Information regarding the status of an application may be obtained from the
Patent Application Information Retrieval (PAIR) system. Status information for
published applications may be obtained from either Private PAIR or Public PAIR.
Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
you have questions on access to the Private PAIR system, contact the Electronic
Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
USPTO Customer Service Representative or access to the automated information
system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.

DRA

/Walter D. Griffin/

Supervisory Patent Examiner, Art Unit 1797